Richard Lang

Patent Trials and Appeals Board

Apr 14, 2020

13601984 - (R) (P.T.A.B. Apr. 14, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/601,984 08/31/2012 Richard Lang DEMOC-004 5934
138718 7590 04/14/2020
Polsinelli LLP
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
GAW, MARK H
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
04/14/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD LANG
____________

Appeal 2018-008839
Application 13/601,984
Technology Center 3600
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed on
January 21, 2020 (“Decision”).1 Our Decision affirmed the Examiner’s
decision rejecting all claims 1, 16, 17, and 21–33 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. We also affirmed the
Examiner’s rejections under pre-AIA 35 U.S.C. § 103(a) of all claims 1, 16,
17, and 21–33.

1 We use the word “Appellant” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Democrasoft, Inc. as the real party in
interest. App. Br. 3.

Appeal 2018-008839
Application 13/601,984

2
In the Request, Appellant contends “that a variety of facts and issues
were either overlooked or misapprehended by the Board Decision in relation
to the rejection under Section 101.” Request 9 (emphasis omitted).
However, we note Appellant does not advance any arguments in the Request
regarding our affirmance of the Examiner’s rejections under 35 U.S.C.
§ 103(a).
We have reconsidered our Decision, in light of Appellant’s arguments
in the Request, and are not persuaded that we misapprehended or overlooked
any points in rendering our Decision for the reasons discussed infra.
Regarding our affirmance of the rejection under 35 U.S.C. § 101,
Appellant contends:
In particular, Appellant notes that the appeal brief in the
present case had been filed on February 13, 2018 and that the
USPTO published revised guidance on the application of
Section on January 7, 2019. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”). As such,
Appellant has not yet had the opportunity to present its
arguments regarding how the 2019 Memorandum applies to the
present claims. As discussed herein, certain aspects of the
Board Decision evidence that various facts and issues related to
same were overlooked or misapprehended.
Request 2 (emphasis omitted).
As correctly noted by Appellant (id.), the U. S. Patent and Trademark
Office (USPTO) published revised guidance on the application of § 101 on
January 7, 2019. See USPTO January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (hereinafter
“2019 Memorandum” 84 Fed. Reg. 50).
Appeal 2018-008839
Application 13/601,984

3
We agree with Appellant that the 2019 Memorandum is an
intervening change in USPTO policy regarding 35 U.S.C. § 101, and we
recognize the Request is Appellant’s first opportunity to argue the Director’s
revised guidance as set forth under the 2019 Memorandum. Therefore, we
consider Appellant’s arguments regarding our application of the 2019
Memorandum as timely.
Appellant contends: “The Board Decision appears to have either
overlooked or misapprehended certain facts and issues in a manner that is
inconsistent with guidance from the Federal Circuit and the United States
Patent and Trademark Office (USPTO) in relation to 35 U.S.C. § 101.”
Request 2.
In particular, Appellant argues that despite the Board making a
conclusory statement that claim 1 was considered as a whole in applying
step 2A, prong one of the Alice analysis, “the Board Decision’s reliance on
the ‘italicized functions’ isolated from purportedly ‘generic’ components in
bold overlooks that even purportedly ‘generic’ components can be ordered
and arranged within the whole in a way as to be patentable.” Request 2
(citing Decision 9–11), and 3 (emphasis omitted).
In support, Appellant contends: “Whether overlooked or
misapprehended, therefore, the Board Decision’s sweeping references to
‘generic computer components’ evidence a failure to consider how such
computer components are configured in an ordered combination to perform
the claimed tasks consistent with the holding of Enfish.” Request 3.

Appeal 2018-008839
Application 13/601,984

4
Enfish
We note the Enfish court held that the subject claims “are not directed
to an abstract idea within the meaning of Alice.2 Rather, they are directed to
a specific improvement to the way computers operate, embodied in the self-
referential table.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016) (emphasis added).
As found by the Enfish court, the structural requirements of prior
databases required a programmer to predefine a structure and subsequent
data entry had to conform to that structure. See Enfish, 822 F.3d at 1337.
The court found the improved database of the Enfish invention “does not
require a programmer to preconfigure a structure to which a user must adapt
data entry.” Id.
Thus, the self-referential database table considered by the court in
Enfish was found to be a specific type of data structure that was designed to
improve the way a computer stores and retrieves data in memory. Enfish,
822 F.3d at 1339. Because the Enfish court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfish claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
Here, Appellant’s claims are silent regarding any mention of a
database. Moreover, Appellant has not shown that any of the features of the
claims on appeal improve the way the recited generic computer components
(as identified in Table One, Decision 9–12) store and retrieve data, in a
manner analogous to that found by the court in Enfish. There is no mention

2 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 221 (2014).
Appeal 2018-008839
Application 13/601,984

5
in Appellant’s claim of a database storage device that includes a self-
referential database table of the type found by the Enfish court to improve
the way a computer stores and retrieves data in memory. See Supplemental
Appeal Br. 3–6, Claims App. (Appellant’s independent claims 1, 16, and
17).
Therefore, on this record, we are not persuaded that Appellant’s
claimed invention improves the functionality or efficiency of the recited
generic computer components, or otherwise changes the way the claimed
generic computer components function, at least in the sense contemplated by
the Federal Circuit in Enfish. See Supplemental Appeal Br. 3, Claims App
(claim 1).
Moreover, Appellant has not persuasively shown an unconventional,
non-generic arrangement or ordered combination regarding the generic
computer components recited in any of the claims on appeal. See e.g.,
BASCOM.3 See also 2019 Memorandum, 84 Fed. Reg. 52. Arguments not
made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant notes, “[t]he 2019 Memorandum expressly states, however,
that ‘in revised Step 2A [E]xaminers should ensure that they give weight to
all additional elements, whether or not they are conventional.’” Request 2–3
(citing 2019 Memorandum, 84 Fed. Reg. 55) (emphasis omitted). Appellant

3 The Federal Circuit held in BASCOM that the claimed Internet content
filtering, which featured an implementation “versatile enough that it could
be adapted to many different users’ preferences while also installed remotely
in a single location,” expressed an inventive concept in “the non-
conventional and non-generic arrangement of known, conventional pieces.”
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016).

Appeal 2018-008839
Application 13/601,984

6
contends: “The extraction of [the] ‘italicized functions shown in Table One’
as the basis for finding the purported abstract idea is therefore clear error.”
Request 3 (emphasis omitted).
We disagree. Under Step 2A, prong one, we have identified in Table
One of our Decision the specific claim limitations that recite an abstract idea
that falls under one of the three categories of abstract ideas identified in the
2019 Memorandum. As explained in the 2019 Memorandum, 84 Fed. Reg.:
Section III explains the revised procedure that will be applied
by the USPTO. The procedure focuses on two aspects of
Revised Step 2A: (1) Whether the claim recites a judicial
exception; and (2) whether a recited judicial exception is
integrated into a practical application. Only when a claim
recites a judicial exception and fails to integrate the exception
into a practical application, is the claim “directed to” a judicial
exception, thereby triggering the need for further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B).
2019 Memorandum, 84 Fed. Reg. 51 (emphasis added).
Further, we have not declined to give patentable weight to the
additional generic computer components. Instead, we have merely identified
them as generic in Table One of our Decision.
Appellant also contends:
The Board Decision erroneously states, for example, that
‘creating a new content package based on the selected portion’
(where ‘the portion of content is less than an entirety of the
content that . . . is stored in memory’) is a mental process.
Board Decision, 11. The human mind cannot create a ‘new
content package’ as claimed. See e.g., Specification as Filed,
[002] (noting that the ability “purchase digital content” -which
is “usually accessed via a website on the Internet” - has been
“limited to purchase of the content in its entirety”). It is
Appeal 2018-008839
Application 13/601,984

7
therefore a factual impossibility to state, as the Board Decision
does, that “creating a new content package” is a mental process.
Request 3 (emphasis omitted).
Appellant refers to our analysis of method claim 1, step d: “atomizes
the content by creating a new content package based on the selected portion
of the content,” which we concluded recites an Abstract idea: “Atomizing
the content by creating a new content package based on the selected portion
of the content could be performed alternatively as a mental step. See 2019
Memorandum 52.” Decision 11 (emphasis omitted).

However, as stated in our Decision at page 16:
providing the feature of user selection of sub-portions of
content for the purpose of monetizing such content is an
abstract idea (i.e., a mental step and/or fundamental economic
practice), as detailed in Table One above. To the extent that
user selection of content is made more granular by the claimed
invention (e.g., selecting an individual song instead of an entire
musical album), we note an improved abstract idea is still an
abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel
and nonobvious claim directed to a purely abstract idea is,
nonetheless patent-ineligible). See also Synopsys, 839 F.3d at
1151 ("[A] claim for a new abstract idea is still an abstract
idea.") (emphasis omitted)[.]
Decision 16.
We note the music (or other recorded content) is created by musicians
(or others) as a mental process. How the music is selected or otherwise
provided (e.g., by the album or by the individual song) is the result of user
selection, which we conclude is a mental process. We therefore find
Appellant’s argument unavailing for the reasons stated in our Decision. Id.

Appeal 2018-008839
Application 13/601,984

8
Appellant further argues:
Whereas prior art ways to purchase digital content had been a
one-size-fits-all approach, the present claim recites generation
of custom digital content packages and custom licenses
governing how different devices are allowed to access such
digital content packages. Such tailored access is similar to that
found to be patentable in Finjan, Inc. v. Blue Coat Systems.[]
879 F.3d 1299 (Fed. Cir. 2018).
Request 4.
Finjan
We are not persuaded by Appellant’s comparison of the claims to the
claims in Finjan. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299,
1303 (Fed. Cir. 2018). In Finjan, the court found that claims directed to a
behavior-based virus scan constituted an improvement in computer
functionality over the “traditional, ‘code-matching’ virus scans.” Id. at
1304. The court determined that the claimed method employs a new kind of
file, allows access to be tailored for different users, and allows the system to
accumulate and use newly available, behavior-based information about
potential threats. Id. at 1305. The court ultimately held that the claims are
“directed to a non-abstract improvement in computer functionality, rather
than the abstract idea of computer security,” and “recite specific steps—
generating a security profile that identifies suspicious code and linking it to a
downloadable—that accomplish the desired result.” Id.
Unlike the claims of Finjan, Appellant’s claims do not employ a
newly generated file containing a security profile in a downloadable, and do
not use a new file to enable a computer security system to improve on or add
a computer functionality by reciting specific steps accomplishing the desired
Appeal 2018-008839
Application 13/601,984

9
security results. Simply put, the argued “custom license terms” in
Appellant’s claims have nothing to do with an improvement in computer
functionality that improves computer security. See Request 5. Therefore,
we are not persuaded that Appellant’s claim 1 (“A method for monetizing
content”) is sufficiently analogous to the behavior-based virus scan subject
claim considered by the court in Finjan.
Appellant additionally argues that “the claimed computer-
implemented generation of custom license terms does not preempt any
human-negotiation or any license.” Request 6.
However, our reviewing court provides applicable guidance: “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–
63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”).
Appellant further argues: “In addition to being distinct from human
implementations, the claimed method is also distinct from prior art digital
implementations.” Request 6. Appellant urges: “The failure to consider
such deviation from prior art conventional approaches is also clear error by
the Board Decision.” Request 7.
But any analysis based upon obviousness is not relevant to our
analysis for patent eligibility under 35 U.S.C. § 101. See Return Mail, Inc.
v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Moreover,
“[g]roundbreaking, innovative, or even brilliant discovery does not by itself
Appeal 2018-008839
Application 13/601,984

10
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450
U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not turn on the novelty of using a user-downloadable
application for the particular purpose recited in the claims).
Appellant further contends:
The Board Decision also erroneously argues that step 2B of the
Alice analysis is purportedly met by the Specification teaching
that [the] “consumer, at best, can purchase a musical track from
a full album but otherwise does not have the means to atomize
content.” Board Decision, 22. Such “musical track” is pre-
packaged content from the content provider, however. Such
prepackaged content is distinct from allowing the user “pick
and choose, separate, or divide” an entirety of content in
accordance with user input. Specification, [002]. In this
regard, the claim explicitly recites 'creating a new content
package’ based on user selected portions. This claimed
‘creati[on of] a new content package’ based on user input is
what the Examiner and the [B]oard Decision fails to
demonstrate as being well-known, routine, or conventional by
clear and convincing evidence under Berkheimer.
Request 8 (emphasis omitted).
In response, we note the Federal Circuit issued the Berkheimer
decision on February 8, 2018, almost a year before the Director’s 2019
Memorandum. To the extent that Appellant’s argument regarding
Berkheimer might be considered timely by our reviewing court (and not as a
Appeal 2018-008839
Application 13/601,984

11
new untimely argument in the Request), we restate our analysis from our
Decision at page 22.
Contrary to Appellant’s argument that “the present
invention allows for the ability to atomize content — a feature
not presently available anywhere” id., we find Appellant’s
Specification expressly describes a well-known example of
atomization of musical album content: “A consumer, at best,
can purchase a musical track from a full album but
otherwise does not have the means to atomize content.” Spec. ¶
2 (emphasis added). Moreover, we note the Examiner provides
Berkheimer evidence in support of the well-understood,
routine, and conventional fact findings in the form of citations
to numerous Federal Circuit case authorities, which Appellant
has not substantively and persuasively distinguished from the
claims before us on appeal. See Final Act. 11–13, 33, 34, 38.

We agree with the Examiner that it was well-understood,
routine, and conventional for users to interact with computers to
make selections at the time of the invention. However, we also
conclude the selection by a user of particular content, or sub-
portions of such content, necessarily involves a mental step to
select the particular sub-portions of content desired — i.e., an
abstract idea, as discussed above under Step 2A, Prong One.
Decision 22.
As for the remaining “receiving” limitation “b” and the “retrieving”
limitations “e” and “f” (see Claim 1, Decision 10–11 (Table One)), we
conclude these limitations use generic computer components in an ordinary
capacity to perform a generic computer task: receiving or retrieving data.
See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(“That a computer receives and sends the information over a network—with
no further specification—is not even arguably inventive.”). That is, these
limitations use a generic computer component that performs a generic
Appeal 2018-008839
Application 13/601,984

12
computer function as a tool to perform an abstract idea. Thus, these
limitations do not integrate the abstract idea into a practical application. See
Alice, 573 U.S. at 223–24.
Instead, these limitations perform insignificant extra-solution
activities. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir.
2016) (agreeing with the Board that printing and downloading generated
menus are insignificant post-solution activities). Thus, we conclude that
“receiving” and “retrieving” limitations “b” “e” and “f” of claim 1 perform
insignificant extra-solution activities that do not integrate the abstract idea
into a practical application.

DECISION
We grant Appellant’s Request for Rehearing only to the extent that we
have reconsidered our Decision. For the reasons discussed above, we are
not persuaded that we misapprehended or overlooked any points in
rendering our Decision. Our Decision is final for purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).

Appeal 2018-008839
Application 13/601,984

13
Outcome of Decision on Rehearing:

Claims 35 U.S.C. § Reference(s)Basis Denied Granted
1, 16, 17,
21–33
101 Eligible 1, 16, 17,
21–33

1, 16, 17,
21–33
103(a) Official Notice
Wong, Marcus
Ginter
1, 16, 17,
21–33

Overall
Outcome
1, 16, 17,
21–33

Final Outcome of Appeal after Rehearing:

Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 16. 17,
21–33
101 Eligible 1, 16. 17,
21–33

1, 16, 17,
22, 25–27,
30, 32
103(a) Wong, Marcus 1, 16, 17,
22, 25–27,
30, 32

28, 29, 31 103(a) Wong, Marcus,
Official Notice
28, 29, 31
21, 23, 24,
33
103(a) Wong, Marcus,
Ginter
21, 23, 24,
33

Overall
Outcome
1, 16, 17,
21–33

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

DENIED